No. 2009-1421 (Fed. Cir. 5/28/2010). Leviton filed several patent applications (that matured to granted patents) in 1999 and 2003 (“Germain application”) with nearly identical and in some cases identical claims. The 1999 and Germain application families were unrelated by priority and had no overlap of inventorship. Leviton failed to disclose the 1999 application during prosecution of the Germain application, and in a reexamination of the earlier issued patent, did not properly disclose the Germain application.
Leviton evidently sued defendants for infringement, and the lower ct found inequitable conduct (with intent to deceive the USPTO) and awarded costs and attorney fees to defendants.
The Fed. Cir. (Michel, Prost, and Moore, opinion by Michel, dissent by Prost) held that the failure to disclose the Germain application was material. Slip op. at 8. But as regarding intent to deceive and inequitable conduct, the Fed. Cir. panel was not convinced and remanded for an evidentiary hearing and bench trial. The panel also vacated and remanded the fee award for vexatious litigation. Prost (dissenting) would have upheld the inequitable conduct and fee awards.